Section 1 - Introduction
Why do you need to keep a good lab notebook? As a result of the General Agreement on Tariffs & Trade (GATT) 关税贸易总协定, there has been a major change in US Patent Law. To take advantage of this change, inventors outside the USA 美国之外的发明者 must learn to behave like US inventors in the way that they keep records of their work using formal laboratory notebooks 正式的实验室笔记簿 corroborated on a regular basis.
The need for this procedure 这道手续 has arisen because, in determining priority of invention, the USA has retained its "first to invent" system rather than switch to 切换到 the rest of the world's "first to file" system.
However, the USA has extended its system to make a level playing field in that now, for the first time, evidence of inventive acts 发明创造行为的证据 that took place outside the USA can be used to establish the date of invention 确立发明日期. This evidence must be up to Court standards. 证据需要达到法院的标准
This change in US law will require a major change of attitude in record keeping by inventors outside the USA wishing to maximise their chances of obtaining US patents.
Section 2 - Change in US Patent law
The United States of America represents one of the largest markets in the world. Possession of a United States patent can be a tremendous commercial advantage. The purpose of this article is to point out the importance of keeping good, reliable laboratory records so as to ensure that, in any US patent disputes regarding the date of invention 关于发明日的专利争议, the necessary evidence is readily to hand.
There have been negotiations by over 100 countries for more than two decades to try and arrive at 努力并达成the General Agreement on Tariffs & Trade (GATT), which includes an Agreement on Trade Related Aspects of Intellectual Property (TRIPS).与贸易有关的知识产权协议 The US administration's bill 法案 to implement the Agreement was passed by Congress and signed by President Clinton 国会通过并总统签署on 8 December 1994. This has resulted in revolutionary changes 革命性变化 in US Patent Law especially affecting foreign (non-US) applicants.
In the race to the Patent Office, in most countries the first to file wins. For historical reasons 因历史原因, the USA has a system in which the first to invent wins and, for the moment, has retained this system. This means that, where two or more parties claim an identical invention, the US Patent Office declares there to be an "Interference" 争议 and begins proceedings 开始程序 to ascertain who was the first party to make the invention.
Section 3 - Effects of law change
The recent changes to US Patent Law now permit an applicant or patentee to establish a date of invention based on evidence of inventive activity occurring outside, as well as inside, the USA.
A further effect 进一步的效应 of this law change is to allow the applicant to "swear back" to this date of invention in order to show that it was earlier than the date of publication of a reference cited as prior art against a patent application.
This change became effective 开始生效 on 1 January 1996. Prior to 1 January 1996, the only date that a non-US patent applicant could rely on was the date of the filing of a US patent application or, if any, a priority application, even though the invention was actually made before filing.
Accordingly, after 1 January 1996, non-US inventors are able to establish invention dates prior to 1 January 1996, although pre-1 January 1996 information is to be treated as showing a date of invention of 1 January 1996. That is to say, the earliest date which can be established is either the filing date or 1 January 1996 for events occurring prior to 1 January 1996.
"Invention" in the USA comprises two elements. These are "conception" and "reduction to practice". 构想和付诸实践 In order to prove a date of invention for US purposes, it is necessary to have proof of conception of the invention and also to show diligence in its reduction to practice. 发明构想的证据以及表明付诸实践的勤勉是必要的
Reduction to practice can be "constructive" (by filing a patent application) or "actual" (eg. the building of a prototype of the invention). 付诸实践可以为结构性的(提出专利申请)，也可以为实际的(发明原型的建立)
Section 4 - Evidence and Diligence
In order to prove the date of invention, US and foreign applicants will need to provide evidence of the date of the conception of an invention and proof of diligence in its reduction to practice.
Evidence
Evidence may take a variety of forms 采取多种形式 but will frequently be contained in a laboratory notebook.
The evidence must clearly show that the inventive act was indeed carried out by the inventor at the date asserted by him and must be signed and dated by both the inventor and a corroborating witness. 证据必须清楚的表明发明行为的确在发明人声称的日期由发明人完成，并由发明人和证人注明日期。
This is because US interference law requires that evidence be "corroborated", by someone who has read and understood the work that has been carried out but is not a potential or actual co-inventor.
Thus, for example, if the inventor is a PhD student, then the witness should not be his or her supervisor if they are co-inventors.
It is not necessary for the witness to say anything. A signature and date under the statement "read and understood" will be sufficient 足够了. As already noted, the witness must have read and understood the work in question before signing and dating any page. Lack of this witness signature can prove fatal, since the presentation of uncorroborated records, even if accompanied by sworn statements, may not be accepted as being credible. All witnesses must, of course, understand the need to maintain confidentiality.
Diligence 勤勉
Diligence in the reduction to practice of an invention means that, as far as possible, generally steady, uninterrupted and constant work occurred following the conception of an invention.
In an interference action, unexplained periods of inactivity 不清楚的不作为时期 could lose the case, especially in a situation where each day is critical. All activities must be accounted for, even if it is only to note that you were waiting for, say, sample analysis that resulted in a delay in the proceedings. 样品分析导致进程的耽搁 Even apparently irrelevant entries noting "on vacation" or "at the dentist" should be included. 即使不相关的记录“放假”或“看牙医”应该被包括
Interferences take place often years after the invention was made 发明之后的若干年 and, unless accurate personal diaries and journals are kept, the careful recording of laboratory notebooks may be the only way of recalling the actual events which occurred at that time and has an advantage over personal papers since they are witnessed.
After all, who can remember the actual date they visited a dentist once a year has passed? Thus the careful keeping and witnessing of notebooks recording progress is vital to proving diligence.
Section 5 - First to invent
There are three simplified scenarios when determining who is the first to invent:
a) Party 1 was the first to conceive and reduce to practice (regardless of diligence) Verdict: Party 1 will thus be the winner. 第一个构想并付诸实践(无论勤勉与否)
b) Party 1 was the first to conceive but Party 2 was the first to reduce to practice. Party 1 did not show diligence. Verdict: Party 2 is the winner. A首先构想，B首先付诸实践，A没有表明勤勉，B胜。
c) Party 1 was the first to conceive and was diligent in reducing the invention to practice although Party 2 was the first to reduce to practice. Verdict: Party 1 is the winner. A首先构想并勤于付诸实践，B首先付诸实践，A胜。
Thus it would be wise to establish good laboratory notebook keeping habits. A well conceived, maintained and witnessed notebook could be crucial in establishing a date of invention in US interference proceedings. It could mean the difference between getting a US patent or not.
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